China’s Well-Known Trademark, A Powerful But Difficult Tool to Obtain
China's trademark regulations are often unclear and confusing to many foreign brand owners - many are surprised to hear that China has a first to file system and, upon further investigation, may learn that someone has already registered their trademark. One powerful tool against these “trademark squatters” is gaining the status of a well-known trademark.
Rather than well-known trademark status being a testament to the quality of goods or services, a trademark recognized as "well-known" is actually afforded a legal status which offers broader protection than normally given to trademarks. The protections offered to well-known trademarks include the following:
- Unregistered rights, meaning that the owner of a well-known trademark would have priority over parties who are first-to-file;
- Cross-class protection, allowing owners to block third party registrations in both similar/identical classes and some dissimilar classes of goods/services;
- Extended time period to bring cancellation proceedings against conflicting trademarks;
- Protection beyond the normal trademark laws, allowing for the cancellation of the registration of an enterprise name which uses the well-known trademark;
- Protection over the Chinese translation of a well-known trademark;
- Domain name protection, allowing the owner to block use of its well-known trademark in domain names.
But when is a trademark considered to be "well-known"? According to China' Trademark Law, there are five factors to be considered when determining whether a trademark is well-known or not,
(1) The degree of public recognition in its trading areas;
(2) The duration in which it has been in use;
(3) The duration and extent of its advertising, and the geographical areas the advertising has covered;
(4) The records of protection it has gained as well-known trademark; and
(5) Other factors serving to make it well-known.
When attempting to gain this status for your mark, unfortunately well-known trademark evidence from jurisdictions outside of China hold little value.
Well-known trademarks may be recognized either through either administrative or judicial procedures, and such recognition will only be made on a case by case basis, in cases where such recognition is requested by the relevant party, and where such recognition is necessary because the party has no other legal recourse available to protect its rights and interests.